DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The Amendment to the Specification and claims have been entered and approved.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public
policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension
of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees.
A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical,
but at least one examined application claim is not patentably distinct from the reference claim(s)
because the examined application claim is either anticipated by, or would have been obvious over, the
reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman,
11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985);
In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to
overcome an actual or provisional rejection based on nonstatutory double patenting provided the
reference application or patent either is shown to be commonly owned with the examined application,
or claims an invention made as a result of activities undertaken within the scope of a joint research
agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file
provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject
to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be
signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting
(NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply
requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the
reply must be complete. See MPEP § 804, subsection |.B.1. For a reply to a non-final Office action, see
37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration
while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§
706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit
www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed
determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A
web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal
Disclaimer that meets all requirements is auto-processed and approved immediately upon submission.
For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-
online/eterminal-disclaimer.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-15 of U.S. Patent No. 12115041.
Although the claims at issue are not identical, they are not patentably distinct from each other because
the claims claim the same compression garment structure with the same garment sections formed of
the same materials and that are configured to lie over the same human body parts of the user as in
claims 1-15 of US Patent 12115041.
Response to the Terminal Disclaimer Submitted on 10-13-2025
The terminal disclaimer submitted on 10-13-2025, identifies a party who is not the applicant (only for
applications filed on or after September 16, 2012; See FP 14.26.10):
For cases filed on/after 9/16/12, 37 CFR 1.321 specifies that only the applicant can disclaim, and the
terminal disclaimer must specify the extent of the applicant’s ownership.
To remedy this:
A request under 37 CFR 1.46(c) to change the applicant needs to be filed, which is (1) a request, signed
by a 1.33(b) party, (2) a corrected ADS (37 CFR 1.76(c)) that identifies the “new” applicant in the
applicant information, and is underlined since it is new, and (3) a 3.73(c) statement showing chain of
title to the new applicant. Along with the § 1.46(c) request we need a POA that gives power to the
attorney who is signing the TD, along with another copy of the TD, unless they file a TD that is signed by
the applicant.
After the above has been corrected, a correct Terminal Disclaimer needs to be resubmitted. No new
fee is required.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GLORIA M HALE whose telephone number is (571)272-4984. The examiner can normally be reached MON.-THURS..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa Tompkins can be reached at 1-571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GLORIA M HALE/ Primary Examiner, Art Unit 3732
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